What are the causes of counterfeiting and piracy in Kenya?
Kenya had one of the biggest counterfeit product markets in East Africa, and due to its borders with Somalia, Uganda, and Tanzania, and its proximity to the ocean and to Asia, it is considered a key distribution point for fakes - with many goods coming from India and China.
Which are the goods that most often face counterfeiting and piracy in Kenya?
The five most-counterfeited products in Kenya include alcoholic beverages, drugs and medicines, cosmetics, soaps and detergents, and hair products.
Does Kenya have a well-established framework for the enforcement of Intellectual Property Rights (IPRs)?
Yes
What are the specific laws/orders/rules laid down in Kenya for the enforcement of Intellectual Property Rights?
The main legal instruments are as follows:
a) The Industrial Property Act of 2001
b) The Copyright Act of 2001
c) The Trade Marks Act (which is currently being reviewed)
d) The Seeds and Plant Variety Act
e) The Trade Descriptions Act
f) The Weights and Measures Act
g) The Counterfeit of Goods Bill
Other laws that are used to tackle counterfeit and piracy where applicable are the Penal Code, the Criminal Procedure Code, the Evidence Act, the Civil Procedure Act, and to a certain extent the Customs and Excise Act (now known as the East African Customs Union Act).
What are the different types of IPRs protected by IPR enforcement in Kenya?
Copyright, Trademarks, Plant Varieties, and Patents are the different types of IPRs protected by IPR enforcement in Kenya.
What are the general IPR enforcement obligations in Kenya?
What are the essential to-dos before an IP rights holder initiates the enforcement proceedings?
Where an infringement proceeding is to be made, it is required to file the following set of documents, which should be prepared before instituting the same to avoid any unnecessary delays:
a) A list of witnesses to be called at the trial;
b) Witness statements signed by the witnesses (except expert witnesses); and
c) The copies of documents to be relied on at the trial.
Furthermore, trademark registration is a prerequisite to the institution of an infringement action based on any such mark.
Is there any limitation period for filing an infringement action?
Yes
The Limitation of Actions Act provides the limitation periods for different claims as follows:
06 years for contractual claims
Which of the following IPR enforcement channels is/are available in Kenya?
A) Government Authorities - Yes
B) Police Officials - Yes
C) Judiciary - Yes
D) Customs - Yes
Are civil actions available for the enforcement of IPRs?
Yes
Is the IP rights holder required to present reasonable evidence to support his claims of infringement against the opposing party in civil litigation?
Yes
Which of the following types of civil remedies is/are available in Kenya?
A) Injunctions - Yes
B) Monetary Compensation - Yes
C) Raids - Yes
D) Seizures - Yes
E) Destruction - Yes
Are there any other civil remedies available in Kenya than the ones mentioned above? If yes, then kindly explain in brief.
No
What is the approximate timeline of civil litigation related to IPR enforcement in Kenya?
The time it takes to conclude a case before the judicial bodies that handle IP matters varies depending on a number of factors, ranging from the availability of dates in the court diary to the commitment of the parties to an expeditious disposal of the case. Cases before the IPT take an average of01 year to conclude, though it may take a considerably longer time in many cases. Proceedings before the Registrar on average take 02 years, while typical High Court cases take 02 to 03 years to be concluded; although the actual timelines may, on a case-by-case basis, be considerably longer or shorter.
What happens if an IP rights holder abuses the enforcement measures in civil litigation?
Are there any disadvantages of civil litigation in Kenya? If yes, then kindly give 2-3 points?
No
Is criminal prosecution available in Kenya for the enforcement of IPRs?
Yes
Is the IP rights holder required to present reasonable evidence to support his claims of infringement against the opposing party in criminal prosecution?
Yes
Which is the responsible authority in Kenya corresponding to the types of criminal remedies available? Also, mention the imprisonment term and the monetary fine.
A) Responsible Authority - There are no specialized divisions of the High Court or the Court of Appeal that deal with the IP matters. While hearing IP matters in the first instance and on appeal, the High Court is presided over by one judge; however, the Chief Justice has power to direct that an appeal be heard by more than one judge of the High Court.
B) Imprisonment Term - Industrial property: 05 years; Copyright: up to 10years; Trademark: up to 05 years; Trade Descriptions: up to 02 years.
C) Monetary Fine - Industrial Property: Kenya Shillings 50 000/-(about US$ 700); Copyright: Kenya Shillings 800 000/-(about US$ 10,000); Trademarks: Kenya Shillings 200 000/-; Trade Descriptions: Kenya Shilling 2,000,000/-
Are there any other criminal remedies available in Kenya than the ones mentioned above? If yes, then kindly explain in brief.
N/A
What happens if an IP rights holder abuses the enforcement measures in criminal prosecution?
Are there any disadvantages of criminal prosecution in Kenya? If yes, then kindly give 2-3 points?
No
Are there any alternative dispute resolution mechanisms which allow parties to resolve their dispute out of court?
None of the Acts governing IP in Kenya provide for methods of alternative dispute resolution (ADR). However, there is nothing that stops the parties in court proceedings from mutually agreeing to arbitration or other forms of ADR to resolve their disputes.
The Kenya Network Information Centre (KENIC) is charged with the administration of the country-code top-level domain (ccTLD) for Kenya (‘.ke’). KENIC’s Alternative Domain Name Dispute Resolution Policy (ADRP) provides for voluntary alternative dispute resolution proceedings for disputes concerning the Kenyan ccTLD.
Are border control measures (customs) available in Kenya for the enforcement of IPRs?
Yes
Is the IP rights holder required to present reasonable evidence to the customs authority/department to support his claims of infringement against the opposing party/importer of counterfeit goods?
Yes
What are the remedies available under border control measures (customs) in Kenya?
The remedies available under border control measures (customs) in Kenya include destruction of goods, fine, and imprisonment not exceeding 05 years, but the same may be extended for subsequent convictions of up to 15 years
Who must bear the costs of customs intervention during enforcement?
What happens if an IP rights holder abuses the enforcement measures in Custom Recordal of IPRs?
The goods will be released for commercial access if an IP rights holder abuses the enforcement measures in Custom Recordal of IPRs.
Which are the best practices for enforcement of IPRs in Kenya?
Court Proceedings
Are there any risks involved in the enforcement of IPRs in Kenya? If yes, then kindly give 2-3 points.
There have been some challenges. First is the lack of sufficient resources, lack of capacity among investigators or law enforcers, among prosecutors and even among judicial officers. Second is the general lack of knowledge and information on the IP laws. Third is the issue of identification of counterfeit and pirated products. Fourth is the cross border piracy fuelled by weak or non-existent laws and enforcement mechanisms in various jurisdictions across Kenya.
Enforcement of IPRs continues to pose a challenge to the rights holders. Pirated and counterfeit products in Kenya present a major impediment to businesses operating in the country. Industry estimates that piracy and counterfeiting of business software, records, music, consumer goods, and electronics, such as mobile phones and pharmaceuticals, in Kenya cost the firms over $300mn in lost sales annually.
